IP

The very boots. This image is tastefully cropped & zoomed so as to not appeal to prurient interests.

[Author’s Note: In a bit of sad irony, my initial draft of this post was written just as news of Kate Spade’s suicide broke on June 5th. Honestly, I knew very little about her except that she (1) designed handbags and (2) is a local icon here in Kansas City. She grew up here, and attended high school a mere two miles from my house. As I’ve come to find out, she brought some Midwestern sensibility to the fashion game, and thus made a pretty big impact on a pretty big industry.]

I’ve attended a lot of CLE lectures over the years, but the best one I ever saw was overseas.* All of the best ones are connected to some sort of long flight, because if you’re in Rome or Paris or Istanbul or Oxford, how bad can the lecture possibly be? Just the setting alone makes them interesting.

Until a few years ago, I had no idea that “Fashion Law” was even a thing. I doubted highly that designer clothes mattered even a bit in the great grand scheme of the universe. Then I heard my friend Layne Randolph‘s lecture on trademarks and trade dress, and I was astounded to discover that, not only was this really “a thing,” but the thing matters– immensely. I simply hadn’t ever contemplated the economic value of high-fashion brands. I’d always viewed Ralph Lauren and Kate Spade and Vera Wang and Manolo Blahnik as a just bunch of fussy/snooty people that were waaaaay too proud of themselves and their work-product. It didn’t help that I’m a big guy, and fashion houses aren’t exactly beating my door down, begging me to buy their stuff. It also didn’t help that many years ago, an ex-girlfriend routinely forced me at emotional gunpoint to watch Sex & The City with her. I hated every excruciating moment of it, and I hated fashion designers by association.

But Layne’s presentation was awfully compelling. As a newly minted J.D., I found the just-filed Christian Louboutin suit against Yves Saint-Laurent an excuse to pay attention to her query: whether Louboutin’s iconic red soles were protected as a mark or dress. It was a pretty compelling legal question.

You learn something new every day, right?

Well, a few weeks later, I plunked down nine dollars to see the third and final installment of the Men in Black series. In the opening scene, a rather curvy alien woman walks down a hallway in a super-duper-maximum-security prison on the moon (hey, I didn’t write it) to spring her boyfriend/boss, one of the guys from Flight of the Conchords (I said I didn’t write it).

Of course, movies these days are all about prurient interests, so the very first action shot is of the bright red soles on the woman’s thigh-high boots as she walks away from the camera while it slowly rises to a very high-cut leather mini-skirt and… well, you get the idea. Just what every twelve year-old boy wants to see at the movies.

Being a twelve year-old boy myself (our bodies age, but our brains’ development arrests in the 7th grade), one would think I’d follow the camera and enjoy the highly inappropriate objectification of a woman’s body. Nope. I was fixated on those crimson soles and the legal issues surrounding them. I wondered how many lawyers were involved in the licensing agreement that Columbia Pictures needed Christian Louboutin’s people to sign, just for that one shot, and w0w, what a waste, because the product placement value of this particular trade dress in a scene targeted to twelve year-old boys is…

Now that I handle service abroad nearly full time, I still can’t watch that movie and not ponder the procedural implications. What if a Dutch company decides to make a cheap knockoff of the same boot? What are the procedural hurdles?

In short, y’all, the world has reached globalized status, and all the ire the Tea Party can muster is not enough to put the Genie back in the bottle. Litigation crosses borders more now than ever, and although we lawyers like to think the law has streamlined itself since the dawn of the internet age… nope. Not as much as you might think. In much of the world, service of process is still effected in the same manner it was in 1965, when the Hague Service Convention first came about. The treaty is still mandatory, and it’s still exclusive doctrine, so trademark and trade infringement suits must still be properly served. Pay attention to detail. It matters.

* Shameless plug: UMKC Law hosts a couple of CLE Abroad programs every year, and I have the privilege of speaking on many of them. The trips are a whole bunch of fun… and potentially deductible.**

** You bet your sweet bippy there’s a disclaimer on this one. I’m not a tax lawyer and, if you’re reading this, neither are you. So seek specific professional advice on whether you can deduct an overseas CLE trip (or how much of it you can).

[Author’s note: this is the latest in a continuing series of commentary on practice-area-specific applications of the Hague Service Convention and other doctrines of international law governing service abroad– not only service of process, but other notices and orders as well. The obvious irony here is that I’m using two images of the great actor Sean Bean which, although developed in satire, are blatant rip-offs. My hope is that I’ll be forgiven, given my ardent and emphatic recommendation that my readers go back and watch The Lord of the Rings and Game of Thrones— at least Season One. If that’s unacceptable, I will readily cease & desist.]

It happens all the time. I’ll give a lecture or mention what I do at a bar association event, and the colleague I just met will express appreciation for what I do, tell me it’s a really neat niche, and then try to convince himself that our practice areas don’t overlap. I’m here to tell you that, yes, they do. The conversation usually goes something like this:

Sorry, Aaron. I’m a a copyright lawyer– I don’t do immigration. But thanks for doing that CLE. You’re a funny guy. (Funny how? I’m a clown? I amuse you?) No, I mean I really like how you got that picture of Ned Stark into your slide deck!

This is Boromir, from the Fellowship of the Ring. It is notNed Stark.

Wait a sec, there, pal. First of all… immigration? You’re kidding, right? You did just sit through my lecture on international law, right? Those are not the same concepts. (He’s not kidding, sadly.*)

Second of all (setting my incredulity aside), let’s say you do handle copyrights exclusively, no visa applications ever. What if some random website hosted somewhere overseas decides that “all your base are belong to us,” rips off your client’s content, and publishes it as their own? Your client justifiably seeks proper attribution and compensation, but the infringing party refuses to cooperate. So you sue.

But don’t you think you might have to serve the publisher? (Yes.) And just how are you going to go about doing that? (Hmmmm. I never thought about that.)

Well, if you’re going to serve in a foreign country, odds are quite good that the Hague Service Convention applies, so you’ve got to figure out what options are available to you.

Next, you may have to set up a translation of the documents. Never mind that the stolen copy is in English– so the bad guys must understand English– foreign translation requirements aren’t focused on the defendant’s comprehension. They’re focused on the foreign officials handling the documents.

You’ll have a tough time getting the copy attributed to your client without that defendant.

* A huge segment of the practicing bar thinks that international law is immigration law, and immigration law is international law. My local bar association even conflates the two ideas in its committee structure. This is so baffling that both the international lawyers and the immigration lawyers in town have given up trying to convince everybody else.

[Author’s note: this is the latest in a continuing series of commentary on practice-area-specific applications of the Hague Service Convention and other doctrines of international law governing service abroad– not only service of process, but other notices and orders as well.]

It happens all the time. I’ll give a lecture or mention what I do at a bar association event, and the colleague I just met will express appreciation for what I do, tell me it’s a really neat niche, and then try to convince himself that our practice areas don’t overlap. I’m here to tell you that, yes, they do. The conversation usually goes something like this:

Sorry, Aaron. I’m a patent lawyer– I don’t do immigration. But thanks for doing that CLE. You’re a funny guy. (Funny how? I’m a clown? I amuse you?) No, I mean I really like how you got that picture of Ned Stark into your slide deck!

This is Boromir, from the Fellowship of the Ring. It is notNed Stark.

Wait a sec, there, pal. First of all… immigration? You’re kidding, right? You did just sit through my lecture on international law, right? Those are not the same concepts. (He’s not kidding, sadly.*)

Second of all (setting my incredulity aside), let’s say you do handle patents exclusively, no visa applications ever. What if some offshore bad guy (let’s call him “OBG” for short) decides that “all your base are belong to us” and starts making your client’s widgets with his own name on them? Your client, who sacrificed an incredible amount of blood, sweat, and tears** to invent– or an incredible amount of money to buy the rights to– the widget, wants to sue. Now.

Well, don’t you think you might have to serve the offshore bad guy? (Yes.) And just how are you going to go about doing that? (Hmmmm. I never thought about that.)

Well, for most of the world, start off by looking up the Hague Service Convention. It’s mandatory doctrine if you need to serve OBG in his homeland.

* A huge segment of the practicing bar thinks that international law is immigration law, and immigration law is international law. My local bar association even conflates the two ideas in its committee structure. This is so baffling that both the international lawyers and the immigration lawyers in town have given up trying to convince everybody else.

** Apologies to a certain Mr. C of Blenheim, Oxfordshire. The original quote included “blood, tears, toil, and sweat” but a 1970s fusion band morphed it a bit for brevity.

For the entire life of my firm, I’ve had a recurring theme in just about every blog I’ve posted: yes, counsel, you do have to translate that thing. Translation is almost always unavoidable if you want a realistic chance of collecting a judgment. But last summer, I offered some tips to limit the cost of translation of documents that have to be served abroad. The first two bits of advice: keep brevity in mind (easy as pie for lawyers!), and avoid exhibits wherever possible. Within the past month, these ideas have become particularly important to two separate clients in the very same practice area: patent infringement. Problem is, those clients hadn’t heard the advice prior to filing their claims, and it has cost them dearly. Six figures dearly.

Patent infringement suits frequently involve foreign defendants. Routinely. In any sort of lawsuit, when just one defendant has to be served in a non-English-speaking country, especially one that is a member of the Hague Service Convention, the documents to be served must be translated. Every word, every page, including exhibits, which are naturally part of the complaint they’re attached to. The defendant may be quite competent in English—he may even be a U.S. citizen or it may be presumed competent simply because it does business in the United States.*

None of that matters, because it’s not about the defendant. It’s about the foreign officials handling the documents… and those officials don’t sprechen-sie Englisch or parlez-vous anglais.

When even a seemingly short patent is included in the exhibits, the cost to translate goes up considerably. When two or three patents are involved, the cost is astronomical. So how do you get around the cost? Just reference the patents— don’t attach them as exhibits. They’re a matter of public record, so if your defendant wants to know what a particular paragraph says in a specific patent, it isn’t that hard to look up.

Take the Wright Brothers’ patent for the aeroplane (yes, it’s spelled that way in the filing). It’s just shy of seven thousand words. Translate that thing into Chinese, and you’re looking at a $2,000 project, with formatting and editing and proofreading. The Wright patent is a mere seven pages, omitting drawings. Today, hundred-page patents are routine. Extrapolate that into dollars and you see the horror of serving in three different countries, all of whom require a different language other than English.

But if the complaint just says “reference U.S. Patent No. 821,393, page three, line ten”, a whole bunch of resources are saved.

Unfortunately, if you’ve already filed the complaint with the full text, it’s probably too late. But a bit of forethought prior to drafting can save literally tens of thousands of dollars in costs to serve.

Tens. Of. Thousands.

Who doesn’t want to do that?

* Ahem, “it” being an entity. Yes, if an entity does business in the United States, it is presumed to be competent in English. But that isn’t the end of the analysis. When serving such defendants, their home countries’ declarations to the Hague Service Convention control language issues—not the presumptions of U.S. law.

About Us

Aaron Lukken and Viking Advocates partner with a network of attorneys and agents around the world. Aaron has a wealth of experience assisting attorneys across North America in navigating the choppy waters of cross-border litigation.

Aaron became intrigued by international issues as an Army brat in the late 1970s, when his father was stationed at NATO Headquarters (SHAPE) in Belgium. His family’s three years abroad sparked a fascination with foreign cultures, languages, and politics, and eventually… international law.